Ex Parte Hasegawa et al

Patent Trial and Appeal Board

Mar 27, 2017

14355738 (P.T.A.B. Mar. 27, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia223l3-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/355,738 05/01/2014 Kohei Ilasegawa Q211137 3880
23373 7590 03/31/2017
SUGHRUE MION, PLLC
2100 PENNSYLVANIA AVENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
EXAMINER
FISCHER, JUSTIN R
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
03/31/2017 ELECTRONIC
Please And below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
PPROCESSING@SUGHRUE.COM
sughrue@ sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIDGESTONE CORPORATION1
Appeal 2017-004766
Application 14/355,738
Technology Center 1700
Before LINDA M. GAUDETTE, CHRISTOPHER C. KENNEDY, and
LILAN REN, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL2
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s decision
finally rejecting claims 1-5, 7-9, 11-14, and 16-24. Appeal Br. 7. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and enter a new ground of rejection.
1 Appellant identifies the real party in interest as itself. Appeal Br. 2. The named
inventors are Kohei Hasegawa and Isao Kuwayama.
2 This Decision includes citations to the following documents: Specification filed
May 1, 2014 (“Spec.”); Final Office Action mailed Mar. 10, 2016 (“Final”);
Appeal Brief filed Sep. 12, 2016 and corrected Summary of Claimed Subject
Matter filed Oct. 21, 2016 (“Appeal Br.”); Examiner’s Answer mailed Nov. 16,
2016 (“Ans.”); and Reply Brief filed Jan. 17, 2017 (“Reply Br.”).
Appeal 2017-004766
Application 14/355,738
The invention relates to a pneumatic radial tire for a passenger vehicle which
is said to have improved durability and wear resistance, and provides high fuel
efficiency and wide free space when in use on a vehicle. Spec. If 8. The inventors
are said to have
discovered that reducing a tire width and increasing a tire diameter or,
more specifically, controlling a cross sectional width SW and an outer
diameter OD of a radial tire under an appropriate SW-OD relationship
is very effective in terms of ensuring good fuel efficiency and wide
free space of a vehicle using the radial tire.
Id. If 9. Independent claim 2 is representative of the claimed invention, and is
reproduced below.
2. A pneumatic radial tire for a passenger vehicle, having a
carcass constituted of plies as radially-disposed carcass cords and
provided in a toroidal shape across a pair of bead portions, a belt
constituted of at least one belt layer, and at least one belt reinforcing
layer as a rubber-coated cord layer extending in the tire
circumferential direction, the belt being provided on the outer side in
the tire radial direction of the carcass, and the belt reinforcing layer
being provided on the outer side in the tire radial direction of all the
belt layers, characterized in that:
provided that SW and OD represent cross sectional width and
outer diameter of the tire, respectively, SW and OD satisfy a formula
shown below
OD>-0.0187 xSW2 + 9.15 xSW-380;
provided, in a cross section in the width direction of the tire,
that: ml represents an imaginary line passing through a point P on a
tread surface at the tire equatorial plane and extending in parallel to
the tire width direction; m2 represents an imaginary line passing
through a ground contact end E and extending in parallel to the tire
width direction; Lcr represents a distance in the tire radial direction
between line ml and line m2; and TW represents a tread width of the
tire, a ratio Lcr/TW < 0.045; and
a ratio W1/W2 of a width W1 in the tire width direction of the
belt reinforcing layer with respect to a width W2 in the tire width
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Application 14/355,738
direction of the belt layer having the narrowest width among the at
least one belt layers constituting the belt satisfies 0.8 < W1/W2 <
1.05.
Appeal Br. 16 (Claims App’x) (italics and underlining added). Claim 24 depends
from claim 23, which, in turn, depends from claim 2. Claim 24 requires that
“SW > 165 (mm)” (claim 23) by virtue of its dependency from claim 23, and
further recites: “wherein SW/OD > 0.24.” Appeal Br. 21.
Independent claim 1 includes substantially the same limitations as claim 2,
with the exception that claim 1 does not include the italicized language, but instead
recites:
provided that SW and OD represent cross sectional width and
outer diameter of the tire, respectively, 0.125 < SW/OD < 0.26 when
SW< 165 (mm)
Id. at 15.
Independent claim 16 includes substantially the same limitations as claim 2,
with the exception that claim 16 does not include the underlined language, but
instead recites: “the tire size is one of’ and lists numerous tire sizes wherein SW
ranges from 145-185 (mm). See id. at 19-20. Claim 16 also recites: “wherein
SW is equal to or larger than 165 (mm) and SW/OD is equal to or larger than
0.24.” Id. at 20. Claim 16 thus recites a narrow numerical range (“SW is equal to
or larger than 165 (mm)”) within the broader range of tire sizes having an SW of
145-185 (mm). It is clear that the narrower range is a limitation, and not merely
the recitation of a preference. Cf. Appeal Br. 13 (arguing claim 16 is patentable for
the same reasons argued in support of patentability of claim 24, thereby indicating
claim 16 is limited in the same way as claim 23 (“SW >165 (mm)”) and claim 24
(“SW/OD > 0.24”)). Therefore, we determine the inclusion of both a broad and a
narrower range in claim 16 does not render this claim indefinite under 35 U.S.C.
§ 112, second paragraph, but that one of ordinary skill in the art would understand
<
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Application 14/355,738
the broadest reasonable interpretation of claim 16 as limited to tire sizes wherein
SW is equal to or larger than 165 (mm). In the event of further prosecution,
Appellant should consider amending claim 16 to delete those tire sizes having an
SW less than 165 (mm).
The claims stand rejected under 35 U.S.C. § 103(a) as follows:
1. claims 1-5, 7, 11, 13, 14, and 16-24 over Takase (JP 2000190706
(A), July 11, 2000) and Asano (EP 0 370 699, May 30, 1990);
2. claims 9 over Takase, Asano and Kakumu (US 5,309,963, May 10,
1994);
3. claims 1-5, 7, 8, 11, 12, 14, and 16 over Nilsson (WO 80/00236, Feb.
21, 1980), Asano, and Onoda (US 5,178,703, Jan. 12, 1993); and
4. claims 9 and 13 over Nilsson, Asano, Onoda, and Kakumu.
Appellant’s arguments in support of patentability are based on alleged errors
in the Examiner’s findings with respect to the primary references, i.e., either
Takase or Nilsson. See generally. Appeal Br. 7-14. Because Appellant does not
challenge the Examiner’s findings with respect to the secondary references, or the
Examiner’s reasons for modifying the primary references based on the teachings of
the secondary references, we focus our discussion on the respective positions of the
Examiner and Appellant with respect to Takase and Nilsson. See In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (citing Ex Parte Frye, 94 USPQ2d 1072 (BPAI
2010) (precedential) (“The panel then reviews the obviousness rejection for error
based upon the issues identified by appellant, and in light of the arguments and
evidence produced thereon.”)).
In our discussion of the rejections, we use the following terms of art and
abbreviations, consistent with their use in the Specification and references (see
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Application 14/355,738
also http://www.bridgestonetire.com/tread-and-trend/drivers-ed/what-is-the-tire-
size-for-my-car (last visited Mar. 24, 2017)):
D = rim diameter
h = tire section height
OD = outer diameter of a tire = D + (2 x h)
SW (Specification) or W (Takase) = cross sectional width of a tire
SW/OD = ratio of cross sectional width to outer diameter of a tire
Aspect ratio = SW/h
Tire size designations (e.g., 155/55R21) = SW (in millimeters)/Aspect ratio,
Construction (e.g., R = radial), D (in inches)
Rejections of claims 1-5, 7-9, 11-14, and 16 over Nilsson
Appellant presents arguments in support of patentability of claims 1 and 16.
When multiple claims subject to the same ground of rejection are argued as a
group or subgroup by an appellant, the Board may select a single claim from the
group or subgroup and may decide the appeal as to the ground of rejection with
respect to the group or subgroup on the basis of the selected claim alone. 37
C.F.R. § 41.37(c)(iv)(2016). Thus, with respect to the rejection based on Nilsson,
we consider only whether Appellant’s arguments are persuasive in identifying
error in the Examiner’s findings with respect to limitations recited in claims 1 and
16.
Appellant argues Nilsson discloses an SW/OD of less than 0.125, which is
outside the ranges recited in claims 1 and 16. Appeal Br. 7-8, 13. As explained by
the Examiner, Appellant’s argument is not persuasive because it fails to address,
and identify error in, the Examiner’s findings with respect to what the ordinary
artisan would have understood from Nilsson’s disclosure. See Ans. 3-4.
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Application 14/355,738
We additionally note this argument is unpersuasive of error in the rejection
of claim 1 over Nilsson because the rejection is based on a finding that Nilsson
explicitly describes a tire having a section width of 175 mm {see Final 7), and
claim 1 does not require a particular SW/OD when SW =175 (mm). The claim 1
limitation that SW/OD is within the range of 0.125 to 0.26 is triggered only when
SW <165 (mm). With respect to claim 16, the Examiner found Nilsson teaches a
conventional tire having SW = 175 (mm) and SW/OD = .25 (Final 5-7; Ans. 3),
which meets the limitation “wherein SW is equal to or larger than 165 (mm) and
SW/OD is equal to or larger than 0.24.” To the extent Appellant is suggesting that
Nilsson teaches away from embodiments that fall within the scope of claim 16
because Nilsson expresses a preference for an SW/OD of less than 0.125 {see
Appeal Br. 13), we are not persuaded for the reasons fully explained by the
Examiner. See Ans. 3-4.
In sum, for the reasons explained above and in the Answer, Appellants have
not identified error in the Examiner’s rejection of argued claims 1 and 16.
Accordingly, we sustain the rejection of these claims as well as the rejections of
claims 2-5, 7-9, and 11-14.
Rejections of claims 1-5, 7, 9, 11, 13, 14, and 16-24 over Takase
Appellant presents arguments in support of patentability of independent
claims 1 and 16, as well as claim 24, which depends indirectly from independent
claim 2. Appellants do not present arguments in support of patentability of
independent claim 2, or its dependent claims, 11-14, 19, 20, and 23. Accordingly,
we summarily sustain the rejections of claims 2, 11, 13, 14, 19, 20, and 23. The
rejections of dependent claims 3-5, 7, 9, 17, and 18 will stand or fall with claim 1.
The rejections of claims 21 and 22 will stand or fall with claim 16.
>s.
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Application 14/355,738
The Examiner finds Takase discloses a pneumatic tire construction wherein
SW (or W) is 120 mm, aspect ratio is 60, and rim diameter D is 17 inches (431.8
mm). Final 2 (citing Takase Table 1, Example 3). The Examiner calculates tire
section height (h) as 72 mm using the formula: tire section height (h) = aspect
ratio x tire section width (SW or W). Final 2, 9. The Examiner calculates OD is
575.8 mm using the formula: OD = (2 x h) + D. Id. at 2, 9-10. From this
calculation of OD and the explicitly disclosed SW of 120 mm, the Examiner
calculates SW/OD in Takase Example 3 as approximately 0.21. Id. at 2.
Claim 1:
The Examiner finds SW/OD = 0.21 in Takase’s Example 3 falls within the
claim 1 range of “0.125 < SW/OD < 0.26 when SW <165 (mm).” Ans. 4; see also
Final 2. Appellant argues Takase discloses rim diameter, but not tire outer
diameter. Appeal Br. 8.
Appellant’s argument is not persuasive of reversible error in the Examiner’s
conclusion of obviousness with respect to claim 1 because Appellant has not
explained why the Examiner’s calculation of the outer diameter is erroneous or
unreasonable. See id. at 8-10 (wherein Appellant provides an English language
version of Takase Table 1, and includes an additional row of SW/OD values
calculated in accordance with the Examiner’s method). Accordingly, we sustain
the rejections of claim 1 and its dependent claims 3-5, 7, 9, 17, and 18.
Claims 16 and 24:
The Examiner finds Takase’s Example 3 embodiment satisfies the formula
“OD > -0.0187 x SW2 + 9.15 x SW - 380” recited in claims 2 and 16. Final 3.
Claim 16 recites specific tire sizes, of which 120 mm is not included. With
respect to this feature, the Examiner finds
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Application 14/355,738
Takase is broadly directed to tire constructions in which the tire
section width [(SW or W)] is between 0.10 and 0.30 times the rim
diameter [(D)]. One of ordinary skill in the art at the time of the
invention would have found it obvious to use any number of known ?
passenger car tire designs, including those set forth by the claims.
Id. at 4. With respect to the specific recitation in claims 16 and 24 requiring SW >
165, the Examiner finds that although the tires explicitly described in Takase’s
Examples have 17 inch rim diameters (see Final 4; Takase Table 1), the ordinary
artisan “at the time of the invention would have found it obvious to use larger
rims,” which, in turn would have section widths greater than or equal to 165 mm
(Final 4). The Examiner finds, more specifically, that a tire having a rim of greater
than 21.5 inches would result in a tire “having [a] section width[] in accordance to
the claims” when W/D is 0.3. Final 4.
With respect to the limitation “wherein SW/OD > 0.24” (claim 24; see also
similar limitation in claim 16), the Examiner further finds “[t]here is absolutely
nothing in Takase that restricts the use of aspect ratios different from the
exemplary examples” and that Takase teaches forming higher and narrower tires,
thereby suggesting a higher SW/OD, i.e., greater than or equal to 0.24 as recited in
claims 16 and 24. Ans. 5. The Examiner concludes, therefore, that one of ordinary
skill in the art “would have found it obvious to form a wheel assembly having the
claimed relationship” of SW/OD > 0.24 when SW >165 mm. Final 4.
Appellant argues the Examiner erred in finding one of ordinary skill in the
art would have made the modifications to rim size and aspect ratio necessary to
achieve an SW/OD of at least 0.24 when SW > 165 mm as required by claims 16
and 24. Appellant disagrees with the Examiner’s finding that Takase does not
provide any restrictions on tire aspect ratio (see Ans. 5). Appeal Br. 9. Appellant
contends Takase clearly suggests that an aspect ratio of at least 60 should be used
because, as evidenced by Takase Table 1, rolling resistance and tire weight
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Application 14/355,738
properties decrease when aspect ratio is reduced from 100 (Examples 1 and 2) to
60 (Example 3). Appeal Br. 9. Appellant thus maintains “one of ordinary skill in
the art would not have chosen a lower tire aspect ratio than 60 when making
modifications to Takase because it would [have been] readily understood that the
resulting tire would exhibit even greater deterioration than Example 3Id.; see
also id. at 10 (arguing a lower aspect ratio would increase rolling resistance, and
might increase tire weight, which “would exactly run counter to the object of
Takase”). Appellant provides calculations showing that even if one of ordinary
skill in the art would have modified Takase to use an aspect ratio of 50, which is
significantly lower than the Example 3 aspect ratio of 60, the resultant tire would
have had, at most, an SW/OD = 0.23, which does not meet the claim 16 and 24
limitation of SW/OD > 0.24. See Appeal Br. 9-11 (using W/D = 0.3 in their
calculations on the basis that it is the value in Takase’s disclosed range of 0.1-0.3
(see Takase Abstract) that would provide the highest possible SW/OD).
As explained by the Examiner, Appellant’s argument is unpersuasive
because it is based on an erroneous contention that Takase fails to teach or suggest
an aspect ratio of less than 60. See Ans. 4-5. Appellant’s contention is not
supported by the disclosure in Takase, but is based solely on attorney argument,
which is not persuasive evidence. See In re Geisler, 116 F.3d 1465, 1471 (Fed.
Cir. 1997) (argument by counsel cannot take the place of evidence); In re Lindner,
457 F.2d 506, 508 (CCPA 1972) (mere conclusory statements of superiority in the
Specification and/or the Brief, unsupported by factual evidence, are of little
probative value).
Appellant also argues test results in the Specification (“for example, test
tires 5 and 6”) provide evidence of criticality in the ranges recited in claims 16 and
24. Reply Br. 6-7; see also Appeal Br. 11-12.
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Application 14/355,738
While it is true that all evidence of nonobviousness, including data in the
specification, must be considered when assessing patentability, In re Soni, 54 F.3d
746, 750 (Fed. Cir. 1995) (citing In re Margolis, 785 F.2d 1029, 1031 (Fed. Cir.
1986)), the burden of analyzing and explaining data to support nonobviousness
rests with the Appellant, In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
Appellant’s assertions in the Appeal and Reply Briefs fail to meet this burden.
Nonetheless, we provide the following observations regarding the Specification
test data.
With respect to the tires tested by Appellant, the Specification discloses that
“the inventors . . . discovered ... test tires 1 to 7 and 17, each satisfying SW/OD <
0.24, more reliably obtained]” both reduced rolling and air resistance values.
Spec. 126 (emphasis added). The Specification further states that test tires 1 to 7,
12, and 17, “satisfying at least one of relationship formulae (1) [(SW/OD < 0.26
when SW< 165 (mm) and OD > 2.135 x SW + 282.3 when SW > 165 (mm) (Spec.
24))] and relationship formula (2) [(OD > -0.0187 x SW2 + 9.15 x SW - 380
(Spec. ^ 25))] unanimously exhibited better results than Reference tire 1 in both
fuel efficiency and comfortability.” Spec. ^ 30. We do not find, nor has Appellant
identified clearly, any disclosure in the Specification that the combination of OD >
-0.0187 x SW2 + 9.15 x SW - 380 and SW/OD > 0.24 at an SW> 165 (mm)
provides improved results. Specification Table 1-1 shows that Test tires 1-7 had
aspect ratios ranging from 55-70, SWs ranging from 155-165 mm and SW/ODs
ranging from 0.22-0.24. Spec. Tf 21. In test tires 5 and 6, SW = 165 mm, SW/OD
= .24, aspect ratios = 55 and 65, respectively, and rim diameters = 20 and 19,
respectively. In test tire 17, which does not meet the limitations relating to SW and
OD values recited in claims 16 and 24, SW =155, SW/OD = .23, aspect ratio =
45, and rim diameter = 21. Id. Appellant’s mere allegation that test tires 5 and 6
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Application 14/355,738
evidence criticality in the ranges recited in claims 16 and 24 {see Reply Br. 6-7) is
not persuasive given the Specification’s disclosure that test tire 17 also provided
the same type of improved features as compared to conventional tires {see Spec.
IH 26, 30).
Accordingly, we are not convinced of error in the Examiner’s rejections of
claims 16 and 24. We sustain the rejections of claims 16, 21, 22, and 24.
New rejection of claim 22
We enter the following NEW GROUND OF REJECTION pursuant to 37
C.F.R. §41.50(b):
Claim is 22 rejected under 35 U.S.C. § 112, fourth paragraph, as being in
improper dependent form for failing to specify a further limitation of the subject
matter in claim 21, from which it depends.
Claim 21 depends from claim 16 and, therefore, includes the limitation:
“wherein SW is equal to or larger than 165 (mm)” (claim 16). Claim 22 recites:
“wherein SW <165 (mm).” The claim 22 range is completely outside the scope of
the range recited in claim 16. Claim 22, therefore, fails to further limit the subject
matter in claim 21 (as well as claim 16).
ORDER
We AFFIRM the following rejections under 35 U.S.C. § 103(a):
1. claims 1-5, 7, 11, 13, 14, and 16-24 over Takase and Asano;
2. claims 9 over Takase, Asano and Kakumu;
3. claims 1-5, 7, 8, 11, 12, 14, and 16 over Nilsson, Asano, and Onoda;
and
4. claims 9 and 13 over Nilsson, Asano, Onoda, and Kakumu.
Pursuant to 37 C.F.R. § 41.50(b), we enter a new ground of rejection of
claim 22 under 35 U.S.C. § 112, fourth paragraph.
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37 C.F.R. § 41.50(b) provides that Appellants, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the following two
options with respect to the new ground of rejection to avoid termination of the
appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence
relating to the claims so rejected, or both, and have the
matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same
record....
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. §1.136(a)(l)(iv).
AFFIRMED:
37 C.F.R. $ 41.50(1)1
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